IPPro Issue 002

Country Profile
O Canada
Grant Lynds of the Intellectual Property Institute of Canada provides an
overview of upcoming changes to Canada’s trademark law and how brands
should adapt their strategies
Ben Wodecki reports
What are the biggest changes coming to Canada’s trademark law?
How will these changes affect Canadian companies?
The biggest change we have on our horizon is the implementation
of our legislation to implement three treaties, the Singapore Treaty
on the Law of Trademarks, the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes
of the Registration of Marks, and the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks. The
significant change is the implementation of Madrid Protocol into
Canada. We’re a little bit later to the party than most people but we’ll
get there and the current forecast is that the agreement will be in
force by 2019.
Canadian companies are going to be more aware that they have the
opportunity to use the Madrid Protocol should they choose to file
outside of Canada, and that there’s a more cost effective and leaner
route to engage trademark systems outside Canada and vice versa.
The companies outside Canada that are looking to file inside Canada,
will see that being inside Canada gives them a more cost-effective
route to consider filing via the Madrid Protocol.
Do the new laws hold any provisions aimed at tackling counterfeits?
Our main anti-counterfeiting measures are still rooted in legislation
that came into force fairly recently in 2015, the Combating Counterfeit
Products Act. We’re still working within the domain or the regime
of that legislation, which is still fairly recent in trying to see if it has
provisions that are effective in tackling counterfeits.
To date, there have been very few seizures under the provisions of that
legislation. Much of the commentary is focused on Canada having a
less than robust regime under that legislation for intercepting and
detaining counterfeit goods that come into Canada.
What is the biggest problem area for Canada in terms of counterfeits?
We’re looking at the US Trade Representative’s Special 301 Report,
which brought some concerns to Canada over in-transit goods—
essentially goods being shipped through Canada, not with a final
destination of Canada, that come from another country and go
through Canada and then onward to the US or other countries.
That is not something that the Canadian government has the ability
to detain and inspect under our Request for Assistance programme,
but that is what the US government has commented on. I know
that hasn’t changed and my only question there is whether or not is
whether the US will continue to comment on that in its 2018 report.
How should brands adapt their strategies to prepare for these
legislative changes?
Once the new legislation to implement the treaties comes into
force, the definition of a trademark will be broader than the current
definition. While some of the types of trademarks are already
recognised, even though they may not be explicitly identified in the
definition of a trademark, the new definition will capture many forms
of trademarks.
Brand owners should review their portfolios to ensure they have
captured all possible trademarks that may be deserving of protection
in Canada.
We also expect there may be increased opposition or summary
cancellation proceedings in the future since trademark owners will
not be required to provide evidence of use of their trademarks in
order to obtain a registration.
As such, if trademarks are registered in the future but use has
not commenced within the requisite time period in Canada, we
expect summary cancellation proceedings to increase as well as
opposition activity.
I think brand owners should therefore plan in their corporate
strategies to engage Canada’s summary cancellation proceedings
and opposition proceedings on an expanded basis, starting after the
changes come into force, which we expect to be in 2019.
What tools are available for Canadian brands looking to enforce
their trademarks against counterfeits?
Canadian brand owners can always look to sue for trademark
infringement or passing-off in Canada’s Federal Court or provincial
courts, and they can also try to engage the Request For Assistance
process, which was brought into force by way of the Combating
Counterfeit Products Act mentioned above.
This is a procedure whereby brand owners can file a list of registered
trademarks, geographical indications or copyrights with the Canada
Border Services Agency (CBSA), to provide that information to the
CBSA should they suspect incoming goods are counterfeit.
There have been many recommendations by interested groups
to the Canadian Federal Government on ways to improve
the Request For Assistance process, which we hope will be
addressed soon to improve Canada’s ability and reputation in the
anti-counterfeiting regime.
How might the renegotiation of the North American Free Trade Agreement
(NAFTA) affect Canadian IP from an enforcement perspective?
Both NAFTA and the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) set minimum standards, which
are often exceeded by either US or Canadian IP rights.
As part of the NAFTA negotiations, the US has apparently been
negotiating for a broader implementation of the enforcement
provisions of TRIPS, but Canada has been focusing on modernising
the language of NAFTA to reflect technological developments since
the mid 1990’s.
The enforcement of copyright in digital applications is one example
where the US has been seeking tighter protection. IPPro
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